DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Katagiri (JP2006283175A, hereinafter “Katagiri”).
The Examiner is providing a machine translation of Katagiri.
Regarding claims 1 and 2, Katagiri teaches a high-carbon steel sheet with excellent machinability for machine parts, automobile parts, etc. that are intended to be cut into a predetermined shape having the following composition (Katagiri, [0001] and [0008-0014]):
Element
Present Invention
Katagiri
Overlap
C
0.40-0.70
0.6-1.5
Preferred: 0.6-1.2
0.6-0.7
Si
0.01-1.3
0-1.0
Preferred: 0-0.4
0.01-0.4
Mn
0.6-3.0
0.1-2.0
Preferred: 0.3-1.0
0.6-2.0
P
0-0.10
0-0.03
Preferred: 0-0.015
Preferred within
S
0-0.01
0-0.02
Preferred: 0-0.01
Preferred same
N
0-0.02
0
0
O
0-0.02
0
0
Al
0.0010-0.500
0.005-0.20
Preferred: 0.01-0.1
Preferred within
Nb
0.0010-0.10
0-0.07
Preferred: 0.02-0.05
Preferred within
Ti
0.01-0.20
0-0.07
Preferred: 0.02-0.05
Preferred within
B
0.0005-0.200
0-0.007
Preferred: 0.0008-0.005
Preferred within
Cr
0.010-0.80
0-2.0
Preferred: 0.1-1.0
0.1-0.8
Mo
0.0010-1.00
0-1.0
Preferred: 0.1-0.4
Preferred within
For claim 2: one or more of the following elements
Co
0-2.0
Claim 2: 0.001-2.0
0
0
Ni
0-3.0
Claim 2: 0.001-3.0
0-2.5
Preferred: 1.0-1.8
Preferred within
Cu
0-1.0
Claim 2: 0.001-1.0
0
0
V
0-1.0
Claim 2: 0.001-1.0
0-0.4
Preferred: 0.1-0.3
Preferred within
W
0-1.0
Claim 2: 0.001-1.0
0
0
Ca
0-0.01
Claim 2: 0.0001-0.01
0
0
Mg
0-1.0
Claim 2: 0.0001-1.0
0
0
REM
0-1.0
Claim 2: 0.0001-1.0
0
0
Sb
0-1.0
Claim 2: 0.001-1.0
0
0
Zr
0-1.0
Claim 2: 0.001-1.0
0
0
Sn
0-1.0
Claim 2: 0.001-1.0
0
0
As
0-0.1
Claim 2: 0.001-0.1
0
0
Balance
Fe and impurities
Fe and impurities
Same
The ranges of Katagiri overlaps, encompasses, or falls within the claimed ranges of claims 1 and 2. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990).
However, the recitation in the claims that the steel sheet is “for hot stamping” is merely an intended use. Applicants’ attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Katagiri discloses the steel sheet as presently claimed, it is clear that the steel sheet of Katagiri would be capable of performing the intended use, i.e. hot stamping, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Additionally, Katagiri teaches the high-carbon steel sheet has excellent machinability, which would also encompass a hot stamping process as claimed.
Katagiri further teaches the high-carbon steel sheet has a mixed microstructure including 40-80% by area ratio of pearlite with a lamellar spacing of 0.4 µm or more dispersed and precipitated with ferrite + spherical cementite or ferrite + rod-shaped cementite (Katagiri, [0015]). The structure of the steel sheet of Katagiri overlaps with a metallographic structure comprising, by area ratio, ferrite: 10% or more and pearlite: 10% or more, wherein a total of ferrite and pearlite is 80% or more, and a dispersion index of pearlite is 0.50 or more of claim 1.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Katagiri (JP2006283175A, hereinafter “Katagiri”) in view of Haga (WO 2021-162084 A1, hereinafter “Haga”).
US2023/0078690 A1 is a machine translation of WO2021-162084A1 and all citations refer to the US publication.
Regarding claims 3 and 4, Katagiri teaches a high-carbon steel sheet with excellent machinability for machine parts, automobile parts, etc. that are intended to be cut into a predetermined shape having the following composition (Katagiri, [0001] and [0008-0014]):
Element
Present Invention
Katagiri
Overlap
C
0.40-0.70
0.6-1.5
Preferred: 0.6-1.2
0.6-0.7
Si
0.01-1.3
0-1.0
Preferred: 0-0.4
0.01-0.4
Mn
0.6-3.0
0.1-2.0
Preferred: 0.3-1.0
0.6-2.0
P
0-0.10
0-0.03
Preferred: 0-0.015
Preferred within
S
0-0.01
0-0.02
Preferred: 0-0.01
Preferred same
N
0-0.02
0
0
O
0-0.02
0
0
Al
0.0010-0.500
0.005-0.20
Preferred: 0.01-0.1
Preferred within
Nb
0.0010-0.10
0-0.07
Preferred: 0.02-0.05
Preferred within
Ti
0.01-0.20
0-0.07
Preferred: 0.02-0.05
Preferred within
B
0.0005-0.200
0-0.007
Preferred: 0.0008-0.005
Preferred within
Cr
0.010-0.80
0-2.0
Preferred: 0.1-1.0
0.1-0.8
Mo
0.0010-1.00
0-1.0
Preferred: 0.1-0.4
Preferred within
For claim 4: one or more of the following elements
Co
0-2.0
Claim 4: 0.001-2.0
0
0
Ni
0-3.0
Claim 4: 0.001-3.0
0-2.5
Preferred: 1.0-1.8
Preferred within
Cu
0-1.0
Claim 4: 0.001-1.0
0
0
V
0-1.0
Claim 4: 0.001-1.0
0-0.4
Preferred: 0.1-0.3
Preferred within
W
0-1.0
Claim 4: 0.001-1.0
0
0
Ca
0-0.01
Claim 4: 0.0001-0.01
0
0
Mg
0-1.0
Claim 4: 0.0001-1.0
0
0
REM
0-1.0
Claim 4: 0.0001-1.0
0
0
Sb
0-1.0
Claim 4: 0.001-1.0
0
0
Zr
0-1.0
Claim 4: 0.001-1.0
0
0
Sn
0-1.0
Claim 4: 0.001-1.0
0
0
As
0-0.1
Claim 4: 0.001-0.1
0
0
Balance
Fe and impurities
Fe and impurities
Same
The ranges of Katagiri overlaps, encompasses, or falls within the claimed ranges of claims 3 and 4. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990).
However, Katagiri does not explicitly disclose hot stamping the steel sheet to change the microstructure from pearlite/ferrite to a metallographic structure comprising, by area ratio, at least one of martensite, bainite, and tempered martensite in a total of 90% or more, wherein a standard deviation in a hardness distribution of prior austenite grains at a sheet thickness 1/4 position is 150 Hv or less.
With respect to the difference, Haga teaches a hot-stamped product including C, Si, Mn, P, S, Al, N, Mo, B, Ti, Nb, V, Zr, Cr, W, Cu, Ni, Ca, Mg, REM, Bi, and a remainder of Fe and impurities (Haga, [0022]). Haga also teaches the steel sheet prior to hot stamping has a total volume percentage of ferrite, pearlite, and bainite in the rolling direction of more than 90.0%, preferrable more than 95% (Haga, [0118]). Haga then teaches after hot stamping the hot-stamped product has a microstructure comprising, by vol%, more than 90.0% of martensite with a standard deviation of the Vickers hardness in the region of 20 or less (Haga, [0022]).
As Haga expressly teaches, the hot stamping allows for a small local fluctuation in the hardness and excellent crashworthiness (Haga, [0045-0046]).
Katagiri and Haga are analogous art as they are both drawn to steel sheets that can be subjected to post processing machining (Katagiri, [0001]; Haga, Abstract).
In light of the motivation to perform hot stamping on the steel sheet of Haga, as set forth above, it therefore would have been obvious to one of ordinary skill in the art to perform hot stamping on the steel sheet of Katagiri in order to decrease the fluctuation in hardness and increase crashworthiness (Haga, [0045-0046]), and thereby arrive at the present invention.
Given that the starting microstructure of the steel sheets of Katagiri and Haga are substantially identical one of ordinary skill in the art would expect that if the steel sheet of Katagiri was subjected to hot stamping, the hot stamped product would similarity have a martensitic microstructure and therefore overlaps with the microstructure of claim 3. Moreover, the deviation in the hardness of Haga falls within the hardness deviation of claim 3. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
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